Ex Parte Bowe et al

Patent Trial and Appeal Board

Sep 29, 2016

12657159 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/657, 159 01114/2010 Michael Damian Bowe
21898 7590 10/03/2016
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
A02033 5127
EXAMINER
OLIVER, BRADLEY S
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DAMIAN BOWE, JANAH CECELIA
SZEWCZYK, and DAVID A. VERBARO
Appeal2015-000349
Application 12/657,159
Technology Center 3700
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1-7. Claims 8-10 have been withdrawn from consideration. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-000349
Application 12/657,159
CLAIMED SUBJECT MATTER
The claims are directed to "devices for applying a fluid sealant with
little or no manual pressure or strain, and to methods for using the devices to
provide a seal, such as a weather resistive barrier." Spec. 1, 11. 4---6. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A device for applying a fluid sealant comprising a wand
with a fluid sealant supply either as part of the wand or as a
separate supply tube and an applicator head, wherein, the wand
is attached to the top of an applicator head via a universal joint,
further wherein, the applicator head includes a chamber on
its underside which is sufficiently large to enable a constant
supply of a fluid sealant to a substrate that is to be sealed, and,
still further wherein, the applicator head has disposed
around its lower periphery an edge adapted to strike the sealant
flat, which edge is a beveled edge or which edge has a row of
brush bristles extending from the edge in a downward direction.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Landrau
Clarke
US 6,422,777 Bl July 23, 2002
US 2007 /0269254 Al Nov. 22, 2007
REJECTIONS
Claim 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clarke and Landrau. Ans. 2.
OPINION
The Appellants first argue that the combination of Clarke and Landrau
is improper because it renders Landrau unsatisfactory for its intended
purpose. Br. 4. This is allegedly so because the "final rejection attempts to
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Application 12/657,159
use Clarke simply [to] plug in a brush element in Landrau," which is an
underwater device and it would be "improper to attempt to modify Landrau
to have a brush extending from the lower periphery of an applicator head or
device where a seal (30) in Landrau is repeatedly specified." As the
Examiner points out, however, "[a]rguing against modifying the Landrau
device is unpersuasive because no modification to the Landrau device has
been put forward." Ans. 4. As the Examiner further explains, "the Clarke
device is modified to include" certain aspects of Landrau, which the
Appellants do not argue. Id. Accordingly, there is no defeating of the
purpose of Landrau because the modifications are being made to Clarke by
incorporating elements from Landrau. The fact that Landrau specifies the
need for an underwater seal is irrelevant to the modification of Clarke.
The Appellants next argue that Clarke fails to teach the limitation
regarding the presence of bristles because Clarke "fails to disclose Bristles at
any edge" and has "no limited width feature (unlike the claimed row)." Br.
6. The Appellants' issues with the application of Clarke to the claims can
best be summed up as follows:
In fact, to arrive at the instant claims one would, with no
guidance to do so, have to take the Clarke brush element (352,
Fig. 16), move it to a border of applicator head (350), eliminate
all of the brush but for an inside or outside (borderline) row, and
then extend that row into the Clarke figure 16 all around such a
border, all with no disclosure or reason to do so. The art fails to
show a row or the peripheral disposition of that row. For these
reasons alone, the instant claims 1-7 are patentable over Clarke
or Clarke in view of Landrau.
Id. The Appellants arguments, however, are not commensurate with the
claim language and do not demonstrate error in the Examiner's rejection of
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Application 12/657,159
claims 1-7. See In re Se([, 671F.2d1344, 1348(CCPA1982) (limitations
not appearing in the claims cannot be relied upon for patentability).
The claims do not require any "limited width feature" nor is there any
language in the claim requiring the absence of bristles in the center of the
applicator. The claims merely require that the "edge has a row of brush
bristles extending from the edge in a downward direction." The fact that
Clarke teaches additional bristles is not prohibited by the claims. Nor do we
read a requirement that the bristles be physically embedded or anchored into
the edge as the Appellants appear to argue. See Br. 6. All that is required is
that bristles extend from the edge, which may simply mean in the vicinity of
the edge as asserted by the Examiner and shown in Clarke.
The Appellants further attempt to elucidate this argument by analogy,
asserting that a painted wall cannot be said to disclose a line. Id. This
analogy, however, is inapt. Unlike a painted wall, a brush has discrete
elements, namely bristles that may be singled out to define a row even if
there are other, additional bristles disclosed. Furthermore, the presence of
additional bristles in Clarke does not undermine a rejection where the claim
uses the open ended transition "comprising." See Exergen Corp. v. Wal-
Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) ("The claim uses the
term 'comprising,' which is well understood in patent law to mean
'including but not limited to."' (quoting CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007))).
Accordingly, we see no basis for asserting that the presence of
additional bristles in Clarke negates the existence of a row as claimed. As
such we sustain the Examiner's rejection of claims 1-7.
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Application 12/657,159
DECISION
The Examiner's rejection of claims 1-7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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